Ex Parte Breed et al

Patent Trial and Appeal Board

Nov 4, 2014

12020684 (P.T.A.B. Nov. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/020,684 01/28/2008 David S. Breed ITI-050 2469
22846 7590 11/04/2014
BRIAN ROFFE, ESQ
8170 McCormick Boulevard, Suite 223
Skokie, IL 60076-2914
EXAMINER
TISSOT, ADAM D
ART UNIT PAPER NUMBER
3663
MAIL DATE DELIVERY MODE
11/04/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID S. BREED, WENDELL C. JOHNSON, and
WILBUR E. DUVALL
____________

Appeal 2012-003990
Application 12/020,684
Technology Center 3600
____________

Before: SCOTT R. BOALICK, Vice Chief Administrative Patent Judge, and
LINDA E. HORNER, MICHAEL C. ASTORINO, WILLIAM A. CAPP,
and NEIL T. POWELL, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants, on July 18, 2014, filed a Request for Rehearing
(“Request”) in response to the Decision mailed June 4, 2014 (the
“Decision”). In the Decision, the Board affirmed the Examiner’s rejection
of claim 1 under 35 U.S.C. § 112, second paragraph (now 35 U.S.C. §
112(b)) as indefinite and entered a new ground of rejection of claims 26–45
under 35 U.S.C. § 112(b) as indefinite.
We do not modify the Decision.
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BACKGROUND AND ISSUE PRESENTED
A request for rehearing is limited to matters overlooked or
misapprehended by the Panel in rendering the original decision. See 37
C.F.R. § 41.52; see also Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI
2010) (precedential) (quoting Manual of Patent Examining Procedure
(MPEP) § 1214.03 (8th ed., Rev. 9, Aug. 2012)).
In the Decision, the Board affirmed the Examiner’s determination that
the term “can be,” as it is used in claim 1 is indefinite. Dec. 6. Appellants
argue that the Decision overlooked or misapprehended that the prosecution
history resolves the alleged indefiniteness of claim 1. Req. 1. In particular,
the Request directs our attention to a statement made by Appellants in their
Appeal Brief that purportedly constitutes prosecution history that clarifies
the meaning of the term “can be.” Req. 3.
The question presented in this Request is whether the Board erred in
affirming the Examiner’s indefiniteness rejection in view of Appellants’
statements in an Appeal Brief that purportedly creates prosecution history
resolving the ambiguity indentified in the Examiner’s indefiniteness
rejection. We answer that question in the negative and maintain the original
decision to affirm the Examiner’s rejection under 35 U.S.C. § 112(b).
ANALYSIS
Prior to this Appeal and during prosecution before the Examiner, the
Examiner rejected claim 1 as indefinite, stating:
Claim 1 is rejected under 35 U.S.C. 112, second paragraph, as
being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as
the invention. The use of the phrase "can be" is indefinite. It is
not clear if Applicant is intending the claim limitations using
the phrase "can be" to be optional or that the phrase should be
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interpreted as a definite statement (for example, using “are” or
simply deleting the phrase; i.e. “roadway conditions from
multiple roadways are obtained” and “and directed from the
remote facility to other vehicles on the roadway”). Clarification
is required.
Final Rejection dated March 21, 2011, p. 3.
Appellants subsequently filed an after-final amendment. Amendment
dated June 21, 2011. In the Amendment, Appellants deleted the phrase “can
be” in two places and substituted in lieu thereof the phrase “are optionally.”
Id. at 2. In the accompanying Remarks, Appellants represented that:
Claim 1 is amended to change the term “can be” to “are
optionally” to thereby clarify that the features set forth in this
“whereby” clause are optional.
Id. at 5.
Thereafter, the Examiner mailed an Advisory Action dated July 5,
2011, responding to Appellants’ after-final amendment substituting “are
optionally” for “can be,” stating:
The request for reconsideration has been considered, but does
NOT place the application in condition for allowance because:
In the Response to Office action of March 7, 2011, and
substantive amendments therein, Examiner did not consider the
phrase “optionally”. Instead, in the corresponding Final
rejection of March 21, 2011, the claims were made to be
definite by substituting “are” for the “can be” limitation. This
was done as a means to enable an expedient prosecution. In
light of this, the “optionally” amendment will not be entered
into the record, as it changes the substantive nature and
interpretation of the claim. Accordingly, the claim would need
additional search and or consideration.
Advisory Action, July 5, 2011, pp. 1–2 (emphasis added).
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The instant appeal followed. In view of the Examiner’s decision not to enter
the after-final amendment, the case came to us with the phrase “can be”
remaining in two places in claim 1.
In their Appeal Brief, Appellants made the following argument on
which they now rely as constituting prosecution history that renders the
claim definite:
The Examiner states that the use of the phrase “can be” is
indefinite. However, in the Advisory Action dated July 5,
2011, the Examiner indicated that the change to the claim to
substitute “are optionally” for “can be” made in the
Amendment dated June 21, 2011 changes the substantive nature
and interpretation of the claim, and was made to make the
claims definite.
So, the undersigned respectfully submits that the term
“can be” was not considered to be definite and was considered
to be optional (or else the Amendment dated June 21, 2011
would not have raised a new issue). That is, if the change to the
claim to be definite was considered to raise a new issue, then
the Examiner inherently must have considered the features
following by the phrases “can be” to be optional, and as such,
with the optional features, the claim should not be deemed
indefinite under 35 U.S.C. §112, second paragraph.
Appellants therefore adopt the Examiner's interpretation
of claim 1 as reciting that the features following the “can be”
phrases are optional, thereby overcoming the rejection of claim
1 under 35 U.S.C. §112, second paragraph, since the claim is
not indefinite for being unclear as to whether these same
features are optional or part of a definite statement. Reversal of
the rejection is thus respectfully requested.
App. Br. 9.
We first address Appellants’ argument that prosecution history created
on Appeal operates to render claim 1 definite, thus requiring reversal of the
Examiner’s rejection. Appellants argue that they made a statement in the
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Appeal Brief that purportedly “adopted” the Examiner’s own interpretation
of claim 1 as reciting that the features following the “can be” phrases are
optional and that this adoption cured the indefiniteness problem. Req. 3,
App. Br. 9. However, Appellants’ argument does not accurately reflect the
Examiner’s interpretation of claim 1 in the Final Rejection. In essence, what
the Examiner actually said was that claim 1 is indefinite because it is
susceptible to more than one interpretation. See Ans. 5–6. It is not correct,
therefore, for Appellants to state that they “adopted” the Examiner’s
position. It is more accurate to state that, during the appeal, Appellants
adopted only one of two possible interpretations identified by the Examiner.
In essence, Appellants argue that we should have accepted their
selection of one of two possible interpretations of “can be” during the
Appeal. According to Appellants, by making a choice between two possible
interpretations identified by the Examiner during the appeal, Appellants used
prosecution history to more clearly define the meaning of the claim, thereby
rendering it definite. If we allow Appellants to so choose between the two
possible interpretations identified by the Examiner, the Examiner concedes
that the claim would thereby be rendered definite. Ans. 6.
In the Request, Appellants argue that the Supreme Court’s recent
decision in Nautilus v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014),
requires us to consider prosecution history in analyzing the definiteness of
Appellants’ claims. Req. 2. More particularly, however, since the
prosecution history that Appellants rely on to render the claim definite took
place in Appellants’ briefs on appeal, Appellants essentially argue that
Nautilus requires us to consider prosecution history generated by an
applicant on appeal as curing a ground of rejection that was otherwise
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appropriate at the time it was made by the Examiner. Thus, according to
Appellants, even if the Examiner’s rejection was appropriate at the time that
it was made, Appellants cured the deficiency in the claim through
prosecution history generated in the Appeal Brief, thereby requiring us to
reverse the Examiner’s rejection.
We agree with the general proposition that prosecution history can
provide an important tool for construing patent claims. See Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (in construing
claims, a court should consider the patent’s prosecution history, if it is in
evidence). We also agree, that, under certain circumstances, prosecution
history may serve as intrinsic evidence for purposes of construing patent
claims before the PTO. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d
973, 977 (Fed. Cir. 2014). However here, Appellants argue that they can
generate prosecution history, for the first time on appeal, that modifies the
scope or meaning of a claim so as to require reversal of an Examiner’s
rejection that was appropriate at the time that it was made.
We disagree with Appellants that Nautilus requires us to allow
Appellants to effectively amend their claims through disclaimer by
generating prosecution history to redefine their claims on appeal. The PTO
is under no obligation to accept a claim construction offered as a prosecution
history disclaimer, which generally only binds the patent applicant or patent
owner. See Tempo Lighting, at 978.
Furthermore, we disagree with Appellants’ characterization that the
Examiner treated “can be” as meaning “are optionally” to render the claims
definite for purposes of performing a prior art examination. Contrary to
Appellants’ characterization of the record before the Examiner, the
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Examiner never substituted “are optionally” for “can be” to render the
claims definite for purposes of the Final Rejection. What the Examiner
actually said, both in the Advisory Action and the Answer is that: (1) for
purposes of the prior art analysis in the Final Rejection, the Examiner treated
“can be” as “are,” not “are optionally;” and (2) changing the phrase “can be”
to “are optionally,” while perhaps rendering the claim definite, would have
changed the substantive scope of the claim requiring a further prior art
search resulting in different grounds of rejection.
Examiner originally interpreted the phrase “can be” to be
indefinite in the Final rejection of March 21, 2011. To expedite
prosecution, examiner assumed that the applicant intended it to
be an active, positive limitation instead of an optional
limitation. Thus, the examiner substituted “are” in place of the
“can be” phrase (i.e., " ... multiple roadways are obtained ... "
instead of " ... multiple roadways can be obtained ... ").
However, the examiner's assumption was incorrect, and as
indicated in the Amendment After Final of June 21, 2011
(which attempted to change “can be” to “optionally”), applicant
did intend on making the limitation at issue an optional
limitation. This amendment was not entered into the record
based on reasoning from the After Final Advisory Action of
July 5, 2011, because the proposed amendment would have
changed the original substantive interpretation of the claim and
resulted in different grounds of rejection.

Changing the phrase “can be” to “optionally” is viewed
as being definite and would have been entered but for
examiner's interpretation based on “are” and it being an After
Final amendment.
Answer 5–6.
Thus, the Examiner treated “can be” as “are” for purposes of applying
the prior art in the Final Rejection. The Examiner did not treat “can be” as
“are optionally” for purposes of the Final Rejection. Appellants’
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representation and argument to the contrary lacks support in the underlying
record.
Finally, Appellants’ argument confuses the roles of patent prosecution
before the Examiner and the subsequent appeal from an adverse decision by
an Examiner to the Board. When an application is before the Examiner, an
applicant has an opportunity to amend the claims and clarify the meaning of
claim terms.
During patent examination the pending claims must be
interpreted as broadly as their terms reasonably allow. When
the applicant states the meaning that the claim terms are
intended to have, the claims are examined with that meaning, in
order to achieve a complete exploration of the applicant's
invention and its relation to the prior art. The reason is simply
that during patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed.... An essential
purpose of patent examination is to fashion claims that are
precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible,
during the administrative process.
In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir. 1989) (citation omitted); see
also In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (a patent applicant
has the opportunity and responsibility to remove any ambiguity in claim
term meaning by amending the application). However, once an Examiner
enters a final rejection, the applicant’s ability to amend claims is limited.
See 37 C.F.R. § 41.33. Once an application comes before the Board on
appeal, our function is to review the correctness of the Examiner’s rejection.
We do not undertake to examine the patentability of claim amendments that
were not entered by the Examiner. Id.
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If we were to accept Appellants’ position that they should be allowed
to rely on prosecution history in their Appeal Brief to redefine the meaning
of claim 1, we would effectively be entering the claim amendment that the
Examiner declined to enter in the Advisory Action of July 5, 2011. The
Examiner finally rejected claim 1 on two, alternative grounds. One ground
was indefiniteness under Section 112, second paragraph. Ans. 5. The other,
alternative ground was a prior art rejection for obviousness under Section
103. Id. If we were to accept Appellants’ prosecution history position and
modify the meaning of claim 1 so that “can be” means “optionally are,” we
would then have to review the Examiner’s Section 103 prior art rejection
using a claim scope that differed from the claim scope used by the Examiner
in searching, examining the claim, and making the rejection.
When the applicant states the meaning that the claim terms are
intended to have, the claims are examined with that meaning, in
order to achieve a complete exploration of the applicant's
invention and its relation to the prior art.
Zletz, 893 F.2d at 321–22 (emphasis added).
In the Advisory Action, the Examiner advised Appellants that entry of
an amendment substituting “optionally are” for “can be” would change the
substantive nature of the claim, requiring an additional prior art search.
the “optionally” amendment will not be entered into the record,
as it changes the substantive nature and interpretation of the
claim. Accordingly, the claim would need additional search
and or consideration.
Advisory Action, July 5, 2011, pp. 1–2.
Thus, by allowing Appellants to effectively amend the substantive
scope of their claims through disclaimer by redefining “can be” to mean
“optionally are,” instead of by amending the claims before the Examiner to
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substitute “optionally are” for “can be,” we would be reviewing the
Examiner’s prior art rejection using a different substantive claim scope than
that used by the Examiner. We decline to take this approach.
In view of the foregoing, we reject Appellants’ contention that
prosecution history generated in the Appeal Brief requires reversal of the
Examiner’s indefiniteness rejection.
DECISION
Appellants’ Request has been granted to the extent that we have
reconsidered the Decision in light of the arguments in the Request, but is
denied with respect to our making any modification to the Decision. Upon
reconsideration, the rejection of claims 1 and 26–45 remains affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

DENIED

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